The Relevance of Invention Date in Patent Prosecution: Part II

This is Part II of my series on the relevance of the invention date in patent prosecution. You may download my entire paper here.

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Using the USPTO PAIR electronic database, I obtained biographical data for 21,000+ randomly selected patent applications filed between 2000 and 2007. The biographical data includes a listing of affidavit filings. After obtaining PDF versions of the affidavits, we categorized them by hand to identify those affidavits associated with an applicant asserting rights based on the invention date. These were typically Rule 131 affidavits.

Of the 21,000+ application file histories in the data set, 0.7% (138) included a Rule 131 affidavit asserting invention-date based novelty rights. However, only 0.1% of the applications included a Rule 131 affidavit that led directly to an issued patent without further substantive action. Interestingly, antedating was not even necessary in some of those successful cases. For instance, several of those applicants had received patents in Europe without relying upon any invention-date-based priority.

One of the most oft-cited advantages of the U.S. invention-date focus is the relative benefit it brings to individual inventors, new entrant small companies, and universities. If these groups are disproportionately benefiting from the U.S. system, we would expect to them taking advantage of their invention-date-based rights. To test this hypothesis, I obtained assignment information (if any) for each application in my Rule 131 affidavit sample, and classified each assignee according to its size and type.

In both absolute and relative terms, companies—especially large and publicly-traded companies—claim invention date rights more often and more successfully than do individual inventors. U.S. publicly-traded companies appear to be disproportionate users of novelty rights: 61% of the applications with Rule 131 affidavits were assigned to these publicly-traded companies. However, the same companies hold only 27% of issued patents. Individual inventor usage of invention-date-based novelty rights did not differ significantly from that expected: the proportion of applications with Rule 131 affidavits that were filed by individual inventor-owners closely resembled the proportion of inventor-owners in the general population of patentees. Meanwhile, the percentage of applications with Rule 131 affidavits that were filed by universities essentially doubled the share expected given the ordinary frequency of university-owned patents. The clearly underrepresented group is that of foreign companies whose applications only represent 10% of those asserting novelty rights but occupy almost half of the general population of patents. As measured by allowance rate, companies tend to have a much more success than individual inventors in obtaining patent protection through the assertion of their invention dates in Rule 131 affidavits.

36 thoughts on “The Relevance of Invention Date in Patent Prosecution: Part II

  1. Leather, thanks for that antidote to the constant drip drip of black propaganda, that FtI breeds ethical behaviour whereas FtF is a thief’s paradise and an incitement to lie.8″>http://www.wholesaleeshop.com.au/LCD-Monitor/lcd004.htm>8 Inch TFT LCD VGA Monitor & HDMI input
    8″>http://www.wholesaleeshop.com.au/LCD-Monitor/lcd005.htm>8 Inch LCD Panel Monitor With Video & Audio Input
    7″>http://www.wholesaleeshop.com.au/LCD-Monitor/lcd006.htm>7 Inch TFT LCD Monitor With VGA Input You are right, of course. No amount of fabricated emails can deprive the FtF-er of the date he deserves. If the thief files first, the law in Europe offers the real owner the right to take over as his own the pending app of the thief.

  2. iania I should say I believe I invented first to file concept if the incident I remenber was the begining of this controversy. I remember an individul approching me and wanting to know what they could do to their patent system to get me to use it and my answer was switch to first to file.They were from a foreign country.

  3. Leather, thanks for that antidote to the constant drip drip of black propaganda, that FtI breeds ethical behaviour whereas FtF is a thief’s paradise and an incitement to lie. You are right, of course. No amount of fabricated emails can deprive the FtF-er of the date he deserves. If the thief files first, the law in Europe offers the real owner the right to take over as his own the pending app of the thief.

  4. I am the one who invented the first to file system in the first place of course

    Of course.

    How old are you, again?

  5. “Okay, suppose I invent something really spectacular and valuable, and I file a patent application. You wish you had the rights to it. Explain to me in simple terms how you would go about stealing my invention in a first-to-invent system.”

    I will tell you how… Thief files his own patent on the same invention with a nonpublication request. Thief tells you he has patent pending on similar device, preventing you from licensing your invention in good faith since most licenses make the licensor warrant his IP is free from third party claims. In the meantime, thief can license his application while neglecting to disclose your application. Thief can also file an interference request, and if you are an independent inventor then you probably don’t have the money for the interference. If you do, thief lies and falsifies documents (such as fakes emails) showing that he is really the first inventor.

    Other ways thief can screw you is by not citing your application in his file history and then hoping the examiner doesn’t find your application, issuing his patent. Forcing YOU to file an interference (or reexam) on thief’s patent.

    In the end, our FTI system can cause a thief to cause an original inventor lots of grief and expense. Sound far-fetched? The above scenario has happened to a client. The situation has led me to believe that FTF is the way to go. Once an inventor files his application, he is free to disclose it without worry.

  6. To ianae I can tell you dident bother to visit the site.In the first place I wouldent steal your invention because I am an honest productive person.I can explain how it is done under the proposed system that I am trying to perfect so it is theft proof as possible.I am the one who invented the first to file system in the first place of course however big business is using it corrupt my original conception.A few of the methods that you may have been stealing my inventions in the past include espionaging through electronic evesdroping voice and internet hacking or my accidental devulgment in conversations intimidations threats stealing the invention after unnatural death and false co inventor claims and on and on.

  7. To IANAE visit our website

    Nice try.

    Okay, suppose I invent something really spectacular and valuable, and I file a patent application. You wish you had the rights to it. Explain to me in simple terms how you would go about stealing my invention in a first-to-invent system.

  8. IANAE, true on the priority point. But you can see why people file a lot of provisionals with small increments in disclosure. It also works to some degree with CIPs, but the provisional route definitely lowers costs.

  9. The system doesent work at all for inventors with valuable ideas.

    Right, you mentioned earlier. Because as soon as you invent something really valuable, someone else goes and invents it before you and manipulates the first-to-invent system to steal your patent.

    Can you explain in a little more detail exactly how that happens?

  10. If the application disclosing A is earlier than the reference, that is enough to remove A as a reference against B and against A + B.

    Why do you need a claim to A+B if you have a claim to A and a claim to B?

  11. IANAE, you can show prior invention of A. If the application disclosing A is earlier than the reference, that is enough to remove A as a reference against B and against A + B.

    Again, please read In re Stempel.

  12. What do you gain from the CIP status? You won’t get the benefit of your earlier filing date for any claim with B in it.

    Better to claim only B in a completely unrelated application that expires 20 years from its (later) filing date. Both patents in combination will cover the A+B genus.

  13. IANAE,

    Try this:

    Parent discloses A. Non statutory bar reference discloses A. CIP discloses B and claims both B and the A + B genus.

    Analyze please.

  14. Filing a CIP to upgrade an earlier filing is the same thing.

    Most claims of CIP priority serve only to downgrade the later filing. If the parent supports (in the “meets all the 112 requirements” sense) the claims in the child, the child should generally be a continuation. If you need the new matter to support the claims in the child, you might as well file a fresh application and get a fresh 20-year clock. If the parent is prior art to the CIP, the priority claim won’t save it.

    CIPs can be useful on the rare occasion that for some reason you are adding new matter to the child, and that new matter is important to add, but you are not relying on that new matter to support the claims in the CIP.

  15. David French writes:

    Commenting on:

    “Can you file a Continuation in Part application which claims priority to two pending applications which were filed separately with the PTO?

    Posted by: DC | Mar 25, 2010 at 02:41 PM”

    “Can you file a Continuation in Part application which claims priority to two pending applications which were filed separately with the PTO?

    Yes, but it would be the rare situation where it would be beneficial. You’re likely giving up patent term for no good reason.

    Posted by: Cranky | Mar 25, 2010 at 02:46 PM ”

    I am of a different view. We should all be filing early and often, at least during the priority year. I have seen a US patent (or application?) that claimed the benefit of 31 US Provisional filings! That is approaching one-a-week. Perhaps that is extreme, but the right to upgrade a patent disclosure during the priority year is there. That right should be exploited.

    Filing a CIP to upgrade an earlier filing is the same thing. The best policy in the future will be to file early and file often to preserve both US and foreign patent rights.

  16. an you file a Continuation in Part application which claims priority to two pending applications which were filed separately with the PTO?

    Yes, but it would be the rare situation where it would be beneficial. You’re likely giving up patent term for no good reason.

  17. Can you file a Continuation in Part application which claims priority to two pending applications which were filed separately with the PTO?

  18. Complainers about FTI say FTI is makes the validity of issued patents uncertain in two ways:

    1) the patent owner does not reliably know the dates of invention of the prior art; and

    2) the public does not know this and the public further does not know, reliably, the dates of invention of the patent.

    On the table is legislation that takes these uncertainties to a whole new level. The public can never know the date of a public disclosure of the inventor, and the inventor can never really know if the source of a reference’s disclosure came from him.

    David French points out that the nature, quality and location of the public disclosure is not stated in the legislation. It can be anywhere in the world, in any language; it does not have to be in writing; and it only has to be to one person who is not under any secrecy obligation. The clever inventor can videotape such an obscure disclosure as proof that it occurred, and keep the tape on file in his vault to be used when necessary.

    Absurd!

    Why in the world would we consider moving from a system that is working and has worked to such a system?

  19. Again, Dennis has no way of determining when a reference is antedated by showing support in the priority documents without a Section 131 declaration. Also Dennis seems to conflate and confuse demonstrations of prior invention with demonstrations of an effective filing date. They are not the same thing.

  20. Dave French The issue of public disclosure is unfair in certain situations the first being how credible was the disclosure, what documentation was there. Another is this is sometimes used when a invention is stolen to gain the priority date wile the actual inventor is filing legitimately.Going the other direction may be bad also as the integrity of the uspto is in question becaused they dont reveal filings until sometimes years later allowing the potential of record tampering

  21. If it is so little used, and it has little effect (seems to be the point of the article), why bother changing it? Is that the point?

    By the way, what are novelty rights? It is a term that does not appear in FIP-CS or FIP-PTO, and I have never heard the expression before. Does this relate to swearing behind, removing a reference, or antedating a reference, all terms which we use for the thing you do when file a Rule 131 declaration?

  22. I haven’t read the actual paper, and I apologize in advance if the issues below are addressed therein–but the part written here appears to me to have serious problems.

    DC: “One of the most oft-cited advantages of the U.S. invention-date focus is the relative benefit it brings to individual inventors, new entrant small companies, and universities.”

    Relative to what?

    Small entities before the USPTO vs small entities before other patent offices?

    Small entities before the USPTO vs larger entities before the USPTO?

    DC: “If these groups are disproportionately benefiting from the U.S. system, we would expect to [sic] them [to be] taking advantage of their invention-date-based rights [IDBR].”

    In proportion to what?

    Proportion of small entities asserting IDBR before the USPTO vs proportion of small entities asserting IDBR before other patent offices?

    Proportion of small entities asserting IDBR before the USPTO vs proportion of larger entities asserting IDBR before the USPTO?

    DC: “If these groups are disproportionately benefiting from the U.S. system, we would expect to them taking advantage of their invention-date-based rights. To test this hypothesis…”

    This statement does not articulate a testable hypothesis.

    DC finds that: “…the proportion of applications with Rule 131 affidavits that were filed by individual inventor-owners closely resembled the proportion of inventor-owners in the general population of patentees.”

    So what? What conclusion can be drawn from this? There is no suggestion that it should be otherwise.

    I know, I know, some will say that because small entities need outside partners, that they are more likely to make disclosures to third parties, that those third parties will have a likelihood of making their own public disclosures, prior to the date of patent application, which likelihood is of sufficient magnitude that, when combined with the increased likelihood that the small entities will make third party disclosures, the overall likelihood of a Rule 131 affidavit being helpful will be increased in the case of a small entity before the USPTO, relative to the likelihood of a Rule 131 affidavit being helpful to a larger entity before the USPTO.

    There is no actual evidence offered for any of these premises–they are merely unsubstantiated assumptions.

    And, there is no discussion of confounding variables, such as proportion of per se applicants, relative burdens of prosecution costs, and so on.

    Again, apologies for not having read the article, but from the above, this appears to be shoddy stuff, and not worth serious consideration.

  23. David French writes:

    Dennis in his blog posting of March 24, 2010 on the topic of the relevance of invention date commenced his posting with the Abstract from his draft article as follows: “Abstract: The US first-to-invent patent regime is unique in that it allows a patent applicant to assert priority rights back to the invention date.”. This is an excellent, sucinct, characterization of the first-to-invent system which has been part of US law since its inception.

    The latest version of the Senate patent law reform bill S515 would change this under a first-inventor-to-file system to allow a patent applicant to assert priority rights back to when the inventor first publicly disclosed the invention.

    This is addressed specifically in my Canadapatentblog.com posting of March 17 in particular in a paragraph that reads as follows:

    “The exceptions of 35 USC 102(b)(1)(B) and 102(b)(2)(B) provide a one-year grace period of permitted public disclosure originating from the inventor associated with the US patent application. The exceptions protect an applicant from any subsequent acts initiated by independent third parties. In both cases, the key language in respect of these exceptions is: “the subject matter disclosed (by a third-party) had, before such disclosure (occurred)/(or was effectively filed), been publicly disclosed by the inventor”. Such an initiative by the inventor, i.e. publicly disclosing the invention, gives the inventor an effective filing date in the United States
    patent office which will shield the applicant against any subsequent public disclosure or patent application made by the independent party for the relevant subject matter. This is an absolutely new initiative in the history of patent law.”

    I would appreciate seeing comments on whether this provision is sufficient to make a shift to a first-inventor-to-file basis for granting patents in the United States acceptable

  24. ‘For instance, several of those applicants had received patents in Europe without relying upon any invention-date-based priority’

    Europe does not have 102(e) which means that many US references are applicable only as of their publication date. Perhaps this explains need to predate in the US. Further, a complete analysis would look at whether the applicant elected to amend the claims in Europe but was able to obtain broader claims in the US.

    Finally, saying that the antedating was not necessary because of the European result assumes that the examiners not only looked at the same art as the US examiner, but also applied novelty and obviousness in the same way. Probably not great assumptions.

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